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Hashtag trade marks

Do hashtag trade marks need special consideration? There’s been quite a bit of discussion on the issue of hashtag trade marks of late, and there was a particularly useful article on the topic in a recent edition (1 February 2016) of the International Trademark Association (“INTA”) Bulletin. The article was entitled “Are Hashtags Capable of Trademark Protection under U.S. Law?”, and it was written by Carrie L. Kiedrowski and Charlotte K. Murphy of the firm Jones Day.

A hashtag is basically any word or phrase that’s preceded by either the hashtag symbol (#) or the word “hashtag”. The hashtag, of course, finds its application in social media. Yet, many companies have sought to use and register hashtags as trade marks.

So, can hashtags be registered as trade marks? According to the aforementioned article, the United States Patent and Trademark Office (“USPTO”) has no issue with hashtag trade marks, and it has accepted hundreds of applications. The USPTO applies pretty much the same rule that it applies to trade marks that have .com or some other domain name suffix affixed to them. The rule is that the hashtag symbol (#) and the word “hashtag” have no distinctiveness whatsoever, so a hashtag trade mark is only registrable if the word that’s added to # or “hashtag” is itself distinctive. So, for example, #STEAKWORTHY for restaurants has been accepted, whereas #PINUPGIRLCLOTHING for online clothing retail and HASHTAGSKATE for skateboards were refused. The USPTO does apparently require a disclaimer of exclusive rights to the hashtag symbol or the word “hashtag”.

The applecart has, however, been upset somewhat by a recent US Federal District court decision. In the case of Eksouzian v Albanese, the issue was whether the use by one of the parties of the hashtags #CLOUDPEN and #CLOUDPENZ on Instagram breached the terms of a trade mark settlement agreement. In this agreement, the party that was using these hashtags had agreed to refrain from any trade mark-style use of the word “cloud” in conjunction with the words “pen” or “penz” (the word “pen” is apparently a descriptive term for e-cigarettes). This undertaking had seemingly been given because the other party to the agreement had US trade mark registrations or applications for Cloud Penz and Cloud Pen.

The court in this case held that there was no breach of the agreement. It justified its decision by saying that “hashtags are merely descriptive devices, not trade marks, unitary or otherwise, in and of themselves”. The court went on to say that the use of #CLOUDPEN was merely “a functional tool to direct the location of the plaintiff’s promotion so that it is viewed by a group of consumers, not an actual trade mark.” Basically, according to the court, a hashtag is a descriptive device and not a source identifier.

This decision seems to conflict slightly with the earlier US decision of Fraternity Collection v Fargnoli, which dealt with the use of the hashtags #FRATCOLLECTION and #FRATERNITYCOLLECTION, and where the court said that the use of a competitor’s name or product in a hashtag in social media posts “could in certain circumstances deceive consumers”.

So where do we stand? It seems quite clear to me that the hashtag symbol (#) and the word “hashtag” have no distinctiveness at all. So, it only makes sense to file an application to register a hashtag trade mark if the word that’s added on is itself distinctive. It also only makes sense to file a trade mark application if you anticipate using the hashtag in some sort of trade mark (source-indicating) way.

Does a hashtag trade mark registration have any legal effect? Once again, it will depend. Leaving aside the issue of trade mark dilution, it seems to me that if the hashtag trade mark is used by an unauthorised third party in a way that might conceivably cause confusion as to origin – in other words, in a way that impacts on the origin, indicating function of the trade mark – there might be an infringement. If it’s used in a way that doesn’t cause any confusion, however, then there’s probably no infringement.

As far as I’m aware, in South Africa there haven’t been any court decisions on hashtag trade marks. There are, however, lots of hashtag trade mark applications, and even a few registrations. It’s a bit of a mixed bag. Here are just a few examples:

HASHTAGRADIO has been accepted, applications for HASHTAGSELFIE and HASHTAGCLOTHING are pending

#1BAR and even # (in class 5) have been registered, #HASHTAG has been accepted